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The main buzzword at the IP Law Summit Fall 2010 was Strategic Patenting - how to cover the available white space, how to do so cost-effectively, and how to handle patent trolls. It turns out that one of the service providers at the event as well as at the upcoming marcus evansIP Law Summit Fall 2011, Bob Fish, Founder of Fish & Associates, PC, has a very interesting Green Fields approach to addressing each of those issues.

What is the idea behind Green Fields Patenting?

Bob Fish: Patenting is all about securing a monopoly. There are two basic approaches to doing that, (1) filing lots and lots of patents, in the vein of an IBM or a Microsoft, and (2) filing broad applications. Of course, most companies cannot afford the first approach, and are therefore very interested in securing broad coverage with a relatively small portfolio of patents.

At the Fall Summit, many people were talking about white space patenting, which for the most part meant broadening the concept of the invention beyond the “preferred embodiments”. To cite a trivial example, a patent on a new type of chair should cover not only nails and tacks as connectors, but also screws, glue and so forth.

But in fact, that is not “white space patenting” at all. It is still invention-centered thinking, whereas true white space patenting is market-centered. The attorney or agent drafting the application should not ask “What did the inventor invent?”, but rather “What do you want to stop the competitors from doing?” Those are two entirely different questions, which result in two very different applications. An even further improvement is Green Field Patenting, where we focus on what customers will want five or 10 years from now.

A market-centered approach to patenting not only yields broader patent claims, but is far more cost-effective. Instead of bloated applications with hundreds of claims, market-centered applications are typically much smaller, less expensive to draft and prosecute, yet are much more effective in securing a commercially significant monopoly. In addition, because the disclosures of market-centered applications are more focused, they go a long way towards avoiding revealing things that are better kept as trade secrets.

A market-centered, Green Field Patenting approach is also one of the best ways of countering the rising tide of patent trolls. Instead of allowing someone outside the industry to put up barriers around an evolving marketplace, it is the established industry insiders that are calling the shots - either securing for themselves weapons to use against their competitors, or at least salting the earth so that patent trolls do not have anything to claim.

Why doesn’t everyone do it this way?

Bob Fish: The major stumbling blocks are lack of communication and creativity. The idea of an inventor writing up a disclosure, handing it off to a patent attorney, and then rubber-stamping the draft patent application, is something that should been replaced years ago. The way to achieve broad, market-centered, cost-effective, patents is for the inventor(s), the attorney or agent, and hopefully a marketing person to brainstorm the white space - what the customers want, and what the company wants to stop competitors from offering. What is needed are creative patent attorneys who are also good communicators.

What are your thoughts for the future of this industry?

Bob Fish: There is a pendulum between leniency restrictiveness in the prosecution of patent claims. In the last 20 years, patent offices have been way too generous in granting patents on trivial inventions, and companies have misallocated their IP dollars. That is now changing. Companies need to focus on building cost-effective, creatively constructed, strategic patent portfolios.

Offering much more than any conference, exhibition or trade show, this exclusive meeting will bring together esteemed industry thought leaders and solution providers to a highly focused and interactive networking event. The summit includes presentations on strategic portfolio management, promoting innovation and the globalization of intellectual property.

Please note that the summit is a closed business event and the number of participants strictly limited.

About marcus evans Summits

marcus evans Summits are high level business forums for the world’s leading decision-makers to meet, learn and discuss strategies and solutions. Held at exclusive locations around the world, these events provide attendees with a unique opportunity to individually tailor their schedules of keynote presentations, think tanks, seminars and one-on-one business meetings. For more information, please visit www.marcusevans.com